Ex Parte Magyaros

Patent Trial and Appeal Board

May 19, 2016

13424675 (P.T.A.B. May. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/424,675 03/20/2012
80711 7590
BGL/ Ann Arbor
524 South Main Street
Suite 200
Ann Arbor, MI 48104
05/19/2016
FIRST NAMED INVENTOR
Barry Magyaros
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
14477-4 1035
EXAMINER
DENNIS, MICHAEL DAVID
ART UNIT PAPER NUMBER
3711
MAILDATE DELIVERY MODE
05/19/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY MAGYAROS
Appeal2014-004606
Application 13/424,675
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Barry Magyaros ("Appellant") 1 appeals under 35 U.S.C. § 134 from
the Examiner's final decision rejecting claims 1-8 in this application. The
Board has jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 The Appeal Brief identifies Appellant as the real party in interest. Appeal
Br. 1.
Appeal2014-004606
Application 13/424,675
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, and it recites:
1. A table game set that consists of elements that are
configured to be played on a table which table game set elements
include:
a plurality of cards upon each of which at least one of
different random word is displayed in another than a normally
recognizable format; and
a mirror by which a reflection of the words and/or images
on the plurality of cards can be viewed in their corresponding
normal recognizable format.
Appeal Br. 16 (Claims App.).
REJECTIONS ON APPEAL
Claims 1and3-6 are rejected under 35 U.S.C. § 102(b) as anticipated
by, or in the alternative under 35 U.S.C. § 103(a) as unpatentable over,
Weston (US 6,682,074 B2, iss. Jan. 27, 2004).
Claims 2 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Weston and Schmidt (US 2008/0054566 Al, pub. Mar. 6, 2008).
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Weston and official notice (Final Act. 5) and/or admitted prior art (Ans. 6).
ANALYSIS
A. New Ground of Rejection - 35 U.S. C. § 112, Second Paragraph
Claim 1 recites "a plurality of cards upon each of which at least one of
different random word is displayed," and "a mirror by which a reflection of
the words and/or images on the plurality of cards can be viewed .... "
Appeal Br. 16 (Claims App.) (emphases added).
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Application 13/424,675
We find claim 1 is unclear. First, it is unclear what is meant by "at
least one of different random word." It is not clear how a singular "word"
can be "different," or from what the word is required to be "different." We
believe Appellant intended the singular "word" to be the plural "words," and
that is how we have interpreted claim 1 for purposes of this decision.
Second, it is unclear whether claim 1 encompasses the use of different
"images" in addition to different words on the plurality of cards. The mirror
limitation refers back to "the words and/or images," but no "images" are
previously recited. Claim 1 as presented on appeal was last amended on
July 29, 2013, when the cards limitation was changed as follows: "a plurality
of cards upon each of which at least one of different random word is \vords
and images are displayed in another than a normally recognizable format."
Amendment (filed July 29, 2013), 2. The mirror limitation was not
correspondingly changed. Id. As a result, the scope of claim 1 concerning
"images" is unclear.
For these reasons, claim 1, and claims 2-8 depending therefrom, are
indefinite. The claims therefore fail to comply with 35 U.S.C. § 112, second
paragraph.
B. Anticipation or Obviousness based on Weston
The Examiner's decision is premised, in part, on construing the
recitation in claim 1 of "table game set that consists of elements that are
configured to be played on a table" as a claim preamble not accorded any
patentable weight. Ans. 7. According to the Examiner, that claim preamble
merely recites the intended use of a structure, and the following claim body
does not depend on the preamble for completeness, and stands alone. Id.
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Application 13/424,675
Appellant replies that "Appellant's preamble does not recite intended
use," and instead is "a clear structural limitation" that "recites that all the
elements recited in the body (Note 'consist of limitation) of the claim ...
'are configured to be played on a table.'" Reply Br. 3--4. In Appellant's
view, "the limitations in the preamble 'give life, meaning, and vitality' to the
claim." Id. at 4.
We agree with Appellant that the phrase "elements that are configured
to be played on a table" in claim 1 is a structural limitation. We determine
the phrase "that consists of' in claim 1 is the transition from the claim
preamble ("table game set") to the claim body ("elements that are configured
to ... normal recognizable format"). The Examiner's reading of claim 1 is
not persuasive, because it would render "elements that are configured to be
played on a table" superfluous to "table game set." See Merck & Co. v. Teva
Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) ("A claim
construction that gives meaning to all the terms of the claim is preferred over
one that does not do so."); Power Mosfet Techs., LLC v. Siemens AG, 378
F.3d 1396, 1410 (Fed. Cir. 2004) (explaining that a claim construction that
renders claim terms superfluous is generally disfavored). Thus, we
determine claim 1 requires the recited elements-that is, the cards and the
mirror-to be configured to be played on a table.
Appellant argues the Examiner errs in finding Weston discloses cards
configured to be played on a table. Appeal Br. 3--4; Reply Br. 1-3. The
Examiner pertinently finds Weston's cards 70 are "inherently capable of
being performed on a table." Final Act. 3--4; Ans. 4. The Examiner reasons
"[t]he size of the table is not claimed, and invariably, a big table could house
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Appeal2014-004606
Application 13/424,675
cards 70 shown in Fig[s]. 8-13" of Weston, and "[t]hese cards are not set
forth to be excessive in size." Ans. 4, 7.
Appellant responds by pointing out Weston describes a treasure hunt
game played in a public facility, such as a family entertainment center or
amusement park. Appeal Br. 4; see Weston, Abstract, Fig. 1, 1:49-51.
Appellant relies on Weston's description of signs 70 as being interactive
clue sources 58 provided "at various locations 60 throughout" amusement
park 20. Appeal Br. 4 (quoting Weston, 4:23-25). Appellant further relies
on Weston's describing each sign 70 being "in a fixed location" in which
"[t]he player cannot remove" the sign, so each sign 70 remains in place to be
used as a clue source for multiple players over an extended period of time.
Id.; see Weston, 2: 13-18.
We agree with Appellant that a preponderance of the evidence does
not support the Examiner's finding that Weston's signs 70 are configured to
be played on a table. They are, rather, configured to be placed at various
locations throughout a public facility such as an amusement park to be read
by persons playing a scavenger hunt game. The Examiner's finding that
Weston's signs are small enough to be played on "a big table" is speculation
and is not supported by the Weston disclosure. Weston's signs 70 must at
least be big enough to be seen and recognized by players of the scavenger
hunt game as they walk through the amusement park. A preponderance of
evidence does not support the notion that such signs would necessarily be
small enough to be played on a table, or otherwise have a structure
configured to be played on a table.
Further, while the drawings of Weston suggest a scale of signs 70 in
relation to eyeglasses (Figure 10) and a magnifying glass (Figure 11 ), "it is
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Appeal2014-004606
Application 13/424,675
well established that patent drawings do not define the precise proportions of
the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue." Hockerson-Halberstadt, Inc.
v. Avia Group Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (citing In re
Wright, 569 F.2d 1124, 1127 (CCPA 1977)).
Thus, the Examiner's finding that Weston's signs 70 are configured to
be played on a table is not supported by a preponderance of the evidence,
and we do not sustain the rejection of claim 1 as anticipated by Weston.
Claim 1 is further rejected, "in the alternative," as obvious over Weston.
Final Act. 3. However, the rejection does not provide findings or analysis to
support the obviousness of claim 1 in light of Weston's cards 70 not being
configured to be played on a table. See id. at 3--4, 6; Ans. 3-5. We,
therefore, also do not sustain the alternative obviousness rejection of
claim 1.
The Examiner's consideration of dependent claims 3-6, likewise, does
not cure the deficiency of Weston as to the parent claim 1. See Final Act. 3-
4; Ans. 3-5. We, therefore, do not sustain the rejection of claims 3-6 as
anticipated by, or in the alternative obvious over, Weston.
C. Remaining Obviousness Rejections
The remaining rejections of claims 2, 7, and 8 as being obvious over
Weston and other evidentiary sources do not cure the deficiency of Weston
as to the parent claim 1. See Final Act. 5; Ans. 6. We, therefore, do not
sustain the rejections of these claims.
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Application 13/424,675
DECISION
The Examiner's decision to reject claims 1-8 is reversed.
For the reasons discussed above, we enter a NEW GROUND OF
REJECTION of claims 1-8 pursuant to 37 C.F.R. § 41.50(b).
Section 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
37 C.F.R. § 41.50(b)(l}-(2).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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